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Topic 3: Patent Families Lutz Mailänder Bangkok 21-23 November 2012 Head, Patent Information Section Hanoi 26-28 November 2012 Global IP Infrastructure Sector Agenda Families – why Families – which Types Unity of patents Families – implications for examination External results, worksharing Prior art Families – where Resources WIPO Handbook: http://www.wipo.int/standards/en/pdf/08-01-01.pdf EPO: http://www.epo.org/searching/essentials/patent-families.html PIUG: http://wiki.piug.org/display/PIUG/Patent+Families Landon IP: http://www.intellogist.com/wiki/Patent_Families Origin of patent families Patent protection for particular invention is territorial, i.e. inventors have to seek protection in different countries Office of first filing (OFF) is usually in country of residence of inventor or applicant Subsequent filings of improvements at OFF Applicants seek protection abroad (“extensions”) Office(s) of second filing (OSF) Parallel with OFF (cost), or Deferred, delayed All filings/applications for “same invention” constitute a patent family Origin of patent families Patent applications can claim priorities of earlier applications (filed in same or other IPOs) Priorities create (legal) family relations between respective earlier and later filings Family relations may exist also without claiming priorities (e.g., technical families) Types of patent families Priorities are claimed National families Filings abroad: Paris convention (&TRIPS) family Filings abroad: PCT system family Without priorities Technical families Domestic families PCT Families on national level National second filings Patent of addition Improvement of original invention of parent patent Unity with parent patent to be given; i.e. as if further independent claim of parent patent Depends on validity of parent patent Request possible up to 18 months after filing of patent patent National second filings Division E.g. for healing a lack of unity Possible usually anytime until grant enters into force „Continuation in part“ New national application claiming priority of one or several previous national application Up to 12 months after filing date of claimed priority National and domestic families National family Any national patent applications having at least on priority in common, e.g. additions, divisions, continuations Domestic family Subsequent publications of same application, i.e. with same number but with different kind codes, e.g. A1: Publication of application (18 months after filing date) B1: Publication of granted patent Various national publication policies see WIPO Standard ST.16 for kind codes: http://wipo.int/export/sites/www/standards/en/pdf/03-16-01.pdf Second filings abroad 12 Paris Convention of 1883 Covers patents, designs, trademarks,.. Equal protection to nationals and foreigners Foreigners: nationals and residents of Union country Mutual recognition of (Paris Convention) priority rights: at OSF: Treatment of application as if filed on date of first filing, i.e. same prior art 12 month period to claim priority Permits combination of multiple priority rights (same or different countries) As long as national definition of unity is met TRIPS agreement Agreement on Trade Related Intellectual Property Rights Provides for “derived” Paris Convention priority, termed “convention priority” Members to TRIPS agreement need not sign Paris Convention but need to apply respective paragraphs on priority rights Patent Cooperation Treaty - PCT „One-stop shop“ for parallel filing in several states Filing with „receiving office“ Paris priority may be claimed or not International phase administered by WIPO: preliminary search and examination by selected ISAs (International Searching Authority; eg EP, AT, SE, US, JP) National phase administered by national IPOs: Decision on entry into national phase at the latest 30 months after filing/priority date National granting procedures Total of national patents/publications constitute family Summary: Filing patents abroad 1. National Routes National Patent Offices Patents 2. Regional Route national Regional Patent Office (ARIPO, EPO) Patents 3. International Route (PCT) Nat. Pat. Off. Int. Search Auth. / Int. Prelim. Exam. Nat. Pat. Off. Authority Reg. Pat. Off. [International phase] [National phase] Timelines to be observed for OSF filing Options for extension to other jurisdiction, i.e. to Offices of Second Filing (OSF): Paris convention & TRIPS : 12 months PCT : 30 months Without priority claim : anytime, but effectively impossible after first publication of OFF since published first filing becomes prior art (e.g. 18 month where OFF publishes applications) Difficulties with later second filings OFF Prior art Filing date OSF Prior Prior art art Priority date Filing date Technical families Applications for the same invention filed in different countries without claiming priority constitute a technical family Indicators: Inventor name (should be the same) Drawings Title (Claims) Technical/artificial/intellectual family No priorities claimed explicitly but still same or similar invention, e.g. filings abroad after 12 months Paris period Has to be determined intellectually: Same inventor (Same applicant) Same or similar title, abstract Same drawings Is therefore usually not recorded in any database (Inpadoc to some extent if detected by EPO examiner) Technical families Risk of not claiming Paris priority: Later filing date implies different prior art, i.e. publications between OFF and OSF filing date are included OFF OSF Paris prior art Non -Paris prior art Supplementary to-up searches may reveal more prior art than other search reports obtained for family members using the priority Family concepts Claiming multiple and different priorities in and from different countries may lead to complex family structures, e.g.: OFF: two applications, e.g. JP-xx, JP-yy OSF: single application claiming priorities of JP-xx+ JP-yy Various concepts / rules exist for constructing families Largely built on the principle of shared priorities See WIPO Handbook definitions Samples Document D1 Prio P1 Document D2 Prio P1 Prio P2 Document D3 Prio P1 Prio P2 Document D4 Prio P2 Prio P3 Document D5 Prio P3 Simple family All members of a family have same priority or priorities → “Equivalents” Document D1 Prio P1 Document D2 Prio P1 Prio P2 Document D3 Prio P1 Prio P2 Document D4 Prio P2 Prio P3 Document D5 Prio P3 Family with 2 members Family with 1 member Complex family All members of a family share at least one priority Document D1 Prio P1 Document D2 Prio P1 Prio P2 Document D3 Prio P1 Prio P2 Document D4 Prio P2 Prio P3 Document D5 Prio P3 Families with 3 members Extended family Any member shares at least one priority with at least one other member Document D1 Prio P1 Document D2 Prio P1 Prio P2 Document? D3 Prio P1 Prio P2 Document D4 Prio P2 Prio P3 Document D5 Prio P3 All documents in same family Summary Application may belong at the same time to Domestic family National family Simple family Extended family An extended family may include Several simple families Several domestic families Several national families Content of family members Claiming the priority of another application for a second filing does not necessarily imply that the content, e.g. descriptions, are identical In case for 2nd filings abroad identity is very likely In general, only parts may be identical, other parts may be added to the 2nd filing, or parts of the 1st filing may be omitted (e.g. in case of continuations) If several priorities are claimed the content is definitively different Similarity for simple – extended families ? Simple family: family members include basically same inventive subject matter Extended family: family members are in similar technical area; but potentially larger diversity because two family members with different priorities may cover different inventions Patent laws usually stipulate unity of invention for any patent application, ie for any claimed invention (not for description) Sources of family information Family information has to be constructed from priority data EPO’s INPADOC database is major source of such family information, retrievable through: EPO’s CCD & Espacenet (simple and extended families) Other free patent information databases, like Depatis Commercial database, e.g. Thomson/Derwent: WPI family Questel/Orbit: Fampat family CAS Using widely INPADOC data, additional sources, and applying proprietary family construction rules Sources of family information Inpadoc family (extended) Simple family (equivalents) Family information in Espacenet INPADOC family data extended families 80+ countries Update weekly but depending on data supply from IPOs Simple families “also published as” equivalents Used for document reclassification after IPC revisions DE19830566 > 2 members, is national, domestic, simple DE19833712 Use of family information for examination ► Passive outsourcing/worksharing: Using external results of family members: Final result, i.e. granted claims, rejections Temporary results, i.e. search/examination reports, in particular prior art Planning/scheduling of active worksharing between IPOs, e.g. to avoid duplication of work INPADOC data comprises family information and legal status of family members Legal status data permits the assessment of examination status and an estimate for availability of final results Use of priority information for examination ► Filing or priority date (s) determine relevant prior art (own or external search results): Multiple priorities may imply multiple priority dates Requires application
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